No Bilski Opinion from the US Supreme Court Today. June 21 Next Possible Day

Thursday, June 17 2010 @ 10:38 AM EDT

No opinion on In Re Bilski will issue today. The next possibility is June 21.

Opinions today were in Dillon v. United States, Schwab v. Reilly, Ontario v. Quon, Stop the Beach Renourishment, Inc. v. Florida Dept. of Environmental Protection and New Process Steel, L. P. v. NLRB. All are available at the link as PDFs, and there are some highlights by Tony Mauro on Law.com.

According to SCOTUSblog, Schwab was the last undecided case, except for Bilski, argued during the last November session.

I don't know about you, but the suspense is killing me.

Gene Quinn, over on IP Watchdog, is celebrating the 30th anniversary of the case that made your DNA patentable, Diamond v. Chakrabarty, and extrapolating that the court should adopt a similarly expansive view of patents to cover software and business methods. He is worried -- and the longer it takes, the
more he worries -- about the Bilski decision with respect to its possible effect on the biotech industry. So I'm not the only one finding the wait difficult, although he and I share no opinions in common.

What is interesting to me is that his reason for supporting an expansive view of what should be patentable is money-making opportunities:

Could you imagine what the US economy would look like without the biotechnology industry? Those 7.5 million jobs are roughly equivalent to the number of jobs the United States has lost since the start of this Great Recession. Without them it is hard to imagine what state the United States would be in from an economic and national security standpoint....

The Bilski case deals with what should be an easy case. The inventor looked, thought and acted. There was nothing tied to any physical apparatus, just a purely mental business method. But rather than limit the decision to the facts of the case the Federal Circuit decided to take the occasion to issue a sweeping decision that called into question the patentability of all methods, particularly software and biotechnology methods. Luckily, the United States Patent and Trademark Office has not interpreted Bilski as broadly as even the express terms of the decision require, so for now patents are still issuing, but a misguided Supreme Court decision continues to be a worrisome fear.

As Judge Newman pointed out in her Bilski dissent: “It is antithetical to this incentive to restrict eligibility for patenting to what has been done in the past, and to foreclose what might be done in the future.” Indeed, the real fear posed by narrow-minded interpretations of what qualifies as patentable subject matter is not what we know to be cut off, but rather what we don’t know will be cut off. Had the Supreme Court decided Chakrabarty the other way it is reasonable to assume the biotech industry would never have flourished. Without patents it would have been starved of funding, medical advances would not have occurred and the high paying technology jobs the industry created would not have existed.

Obviously, people can make a bundle with patents, and they do, but the purpose of patents is supposed to be a balance between letting someone milk a monopoly and letting innovation flourish, and when it comes to software patents, I think there can be no doubt that they hinder innovation, particularly innovation in Free and Open Source Software development, as Red Hat and the Software Freedom Law Center and others argued in amicus briefs filed in In re Bilski. There, software patents are hindering innovation, without any doubt at all. And besides, algorithms are math. And math is exempted from patentable subject matter. No human created or made math. DNA either, now that I think of it. So he's really arguing that the law should allow what traditionally was not patentable.

He's free to do that, but I think he should be clearer in expressing it. Here's what he writes:

In Chakrabarty the Supreme Court noted that the United States Congress chose expansive terms such as “manufacture” and “composition of matter,” modified by the comprehensive “any,” in the patentable subject matter law, 35 USC 101, which says:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Furthermore, it was noted, as has been the case in every patentable subject matter decision, that the Legislative History to the 1952 Patent Act explained that it was the intent of Congress to allow patents on “anything under the sun that is made by man.” As a result of the expansive view of patentability demanded by Congress the Supreme Court had little difficulty finding the Chakrabarty innovation to be patentable subject matter.

He might want to add an explanation of what the wording "subject to the conditions and requirements of this title" means. BitLaw explains what he does not:

However, there are certain "inventions" which are not patentable under the Patent Act. Examples relevant to the computer and Internet field can be seen from the recent rules [PDF] issued by the U.S.P.T.O. in connection with software patents (dated October 2005). In these rules, the Office stated that the following items were "clearly non-statutory":

* data structures or programs per se (these are considered "functional descriptive material," which impart functionality when employed as a computer component but are mere descriptive material when claims standing alone)--these items may be patentable when claimed in a different form to include computer-readable medium;

* Nonfunctional descriptive material, such as music, literary works, and compilations or mere arrangement of data;

* Electromagnetic signals, which are considered forms of energy and as such are nonstatutory natural phenomena (which is why computer programs are patentable when embodied in something physical, such as a computer-readable medium, but computer programs are not patentable when embodied in a computer-readable signal stream).

These items are considered indistinguishable from abstract ideas and laws of nature, and therefore are unpatentable.

Within the 2005 guidelines is a flowchart that Examiners should use when evaluating inventions for subject matter eligibility. These guidelines can be seen separately here.

BitLaw also provides a history of software patents, showing that it certainly has not always been the case that software could be patented, nor is it clear that it will be in the future, which is what Quinn is worried about. A broader history of patents in general is here, provided by the law firm Ladas & Parry. They're an IP firm, and so they have a gung ho view of patents, of course, and they don't deal with software patents on that page. But this paper, The Expansion of Statutory Subject Matter Under the 1952 Patent Act [PDF], takes you through the history in the US of computer software and patents. The US Supreme Court in Gottschalk v. Benson, for example, denied a patent on the grounds that "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." And math is not supposed to be patentable. You can listen to the oral argument in that case, by the way, thanks to the wonderful Oyez collection.

It's not like it's never been held that software was made up of algorithms and that they are math and hence not patentable. For some reason, Quinn continues to argue that software isn't math, and seems to think this is a revolutionary concept invented by Groklaw. Hmm. Don't give me ideas about getting a patent. Kidding.

If you look at the Patent Law itself, you will see that conditions means some things like the condition that a patent be nonobvious, for example. Here's the list of requirements, and here's a flowchart from the 2005 rules showing the guidelines examiners follow. The first requirement on the list is that it be statutory, meaning that the law allows it to be patented. And that is precisely the question before the court now in In Re Bilski, what can and what can't be patented?

And my anxious hope, as we await the opinion, is that the justices of the US Supreme Court take into consideration the need for openness and sharing in the development of FOSS software. It's foundational. And if you think that doesn't matter to the economy, just consider that every time you go to Google, you are using Linux. Yes. The Internet itself is not patented. It's FOSS too. Did it not contribute mightily to the world economy?